19 March 2013Trademarks

Mexican Supreme Court upholds iFone ruling

The Mexican Supreme Court upheld the decision that Apple cannot operate its ‘iPhone’ trademark for telecommunications services on March 15.

The court ruled in favour of Mexico City-based telecoms company, iFone SA de CV, which received its ‘iFone’ trademark in 2003. The iFone mark is in Class 38, which covers telecommunications services.

The ruling means Apple may not run any of its telecoms services using the ‘iPhone’ mark in Mexico. As Apple still holds a Class 9 ‘iPhone’ trademark, which covers mobile phones, it may continue to sell iPhones in the country.

Apple applied to the Mexican Institute of Intellectual Property for its Class 38 ‘iPhone’ trademark in 2007. In 2009 it filed a complaint to cancel iFone’s trademark on the grounds that it was not being used, and could cause confusion.

Late in 2012, the Mexican Federal Court found that iFone’s trademark was in fact in use, and as the company had received it before Apple, dismissed the claim. The case then came before the Supreme Court.

Bernardo Herrerias Franco, a partner at Barrera Siqueiros Torres Landa in Mexico City, said: “Under Mexican law, iFone is entitled to at least 40 percent of total sales of telecommunications services rendered by Apple and any other cell phone company under the iPhone trademark since the companies started using the latter mark, as the iFone trademark was registered back in 2003.”

He added: “Apple lost the legal battle where the validity of the iFone trademark was challenged and now the infringement lawsuits brought by iFone have to be resolved in order for a civil judge to have the final word on the total amount of damages iFone could claim/collect.”

“These lawsuits have to be resolved first on the administrative side and thereafter follow the civil legal path to claim and collect damages.  Thus, the dispute is still going to take several years,” he said.

The decision comes weeks after Apple’s application for exclusivity to the ‘iPhone’ trademark was refused by the Brazilian industrial property office.

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